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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Delamar Academy -v- Go-Catch Media Ltd [2004] DRS 1543 (29 April 2004) URL: http://www.bailii.org/uk/cases/DRS/2004/1543.html Cite as: [2004] DRS 1543 |
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Nominet UK Dispute Resolution Service
Dispute no. 1543
Delamar Academy -v- Go-Catch Media Limited
Decision of Independent Expert
1. Parties
Complainant:Delamar Academy
Country: UK
Respondent: Go-Catch Media Limited
Country: UK
2. Domain Name
delamaracadamy.co.uk (the "Domain Name")
3. Procedural Background
3.1 On 29 January 2004, the Complainant submitted a Complaint under the Nominet Dispute Resolution Service Policy (the "Policy") to Nominet UK ("Nominet") electronically, and sent a hard copy of the same by post. The hard copy of the Complaint was received by Nominet on 2 February 2004 and entered into the system on 4 February 2004. The Complaint documents were validated and sent to the Respondent on 5 February 2004. The Respondent's Response was received by Nominet and forwarded to the Complainant on 27 February 2004. No Reply from the Complainant was received within the five day period after receipt of the Response by the Complainant, and the mediation period began on 17 March 2004. By the end of the mediation period on 31 March 2004 no resolution had been reached and, on receipt by Nominet on 16 April 2004 of the relevant fee from the Complainant, the matter was referred for a decision by an expert. On 23 April 2004, I was appointed as the Expert in relation to this matter.
4. Outstanding Formal/Procedural Issues
4.1 Paragraph 5(c) of Nominet's procedure for the conduct of proceedings under the Dispute Resolution Service (the "Procedure") sets out various procedural rules for the Response. The Respondent's Response did not comply with all of these rules, as it was not received by Nominet in electronic form, did not specify the manner in which the Respondent wished to be contacted and did not state whether any legal proceedings had been commenced or terminated in connection with the Domain Name. However, it would appear that these defaults have not prejudiced the Complainant.
4.2 Of more concern is the fact that the rule at paragraph 5(c)(v) of the Procedure has not been complied with. This rule requires the Response to be verified by the statement "The information contained in this response is to the best of the Respondent's knowledge true and complete and the matters stated in this response comply with the Procedure and applicable law".
4.3 Whilst the Policy does provide for an oral hearing in "exceptional cases", as a matter of practice in almost all cases a decision is made by an expert on the papers put before him by the parties. In such circumstances, it is not possible to test the veracity of any assertions made by a party through cross-examination, as would be the case at trial in court proceedings. Therefore it is vital that parties at least comply with paragraph 5(c)(v) of the Procedure.
4.4 Failure to comply with paragraph 5(c)(v) may result in an expert refusing to take account of the contents of any Response. In this case I have considered the Response, but the Respondent's failure is something that I have taken into consideration when judging the weight to be accorded to the Respondent's statements and allegations in that document.
5. The Facts
5.1 The Complainant is the "Delamar Academy". This appears to be the trading name of Mrs Penny Shawyer, Delamar being Mrs Shawyer's maiden name. Mrs Shawyer has traded under the name "Delamar Academy of Make-up" for 17 years. Some of its previous students have gone on to be very successful in their field, including some who have won Academy Awards for make-up. The Complainant is also the registrant of the domain names <delamaracademy.com>, <delamaracademyofmakeup.com>,
<delamaracademyofmakeup.co.uk> and <themake-upcentre.co.uk>.
5.2 The Domain Name was registered in the name of the Respondent (by whom it continues to be held) on 8 December 1999. The Respondent is a limited company which was incorporated on 21 April 1999 as Gogacz Media Limited. The Company's name was changed to Go-Catch Media Limited on 17 November 1999.
6. The Parties' Contentions
Complainant
6.1 The Complainant seeks transfer of the registration of the Domain Name into its name on the grounds that it is identical or similar to a name or mark in which it has rights and the registration of the Domain Name in the name of the Respondent is an Abusive Registration.
6.2 The substance of the Complaint is to be found in a single paragraph. That paragraph first briefly outlines the history of the Delamar Academy business and then goes on to read as follows:
"The person who has registered [the Domain Name] as her own is an IT secretary employed by our landlord. She has no right to use a name that is not her own or to claim ownership of a domain name clearly describing a business where she has no involvement. This has been done as a blocking registration, to confuse our customers and to steal prospective students for the make up courses that she would like to set up. We should like [the Domain Name] to be transferred to us".
Respondent
6.3 The Respondent's Response takes the form of a single letter from one Anna MacDonald of Go-Catch Media Ltd. It consists primarily of a number of comments upon statements contained in the Complaint. In the circumstances, it is easiest to simply repeat the Respondent's contentions in full. They are as follows:
"I hereby inform you that the above domain name was registered on the behalf of a Go-Catch Media Ltd. client. The client has been informed of the complainant's letter.
The complainant's allegations in his letter to Nominet concerning me are wrong, unacceptable and personally offensive.
Below I shall address the complainant's points in his letter dated 9/01/2004.
1. Complainant: 'The person who has registered this domain name as her own is an IT secretary employed by our landlord.'
2. Respondent: I am the Marketing and Media Director for the complainant's landlord, The Mr. David Game, Chairman of the David Game College Group, owner of the premises occupied by the complainant and a business partner of the complainant.
3. Complainant: 'She has no right to use a name that is not her own or to claim ownership of a domain name clearly describing business where she has no involvement.'
4. Respondent: I have never used the name in question. The name Delamaracademy.co.uk does not clearly describe, involve, or even imply any connection whatsoever to makeup.
5. Complainant: 'This has been done as a blocking registration, to confuse our customers.'
6. Respondent: This domain name registered for a client of Go-Catch Media Ltd. and parked on my company's web server since its registration has never been activated and cannot be accessed for any of the purposes explicitly alleged by the Complainant and for that reason alone it leaves his allegation uncorroborated.
7. Complainant: 'and to steal prospective students for makeup courses that she would like to set up.'
8. Respondent: I find the accusation directly insulting and slandering of my good name and reputation. I refuse to lower myself to such demeanour and I therefore treat this statement with the contempt it deserves. Furthermore, I justly demand a full apology, from the complainant, in writing, for his unsubstantiated reference [sic] on my character. I reserve the right to seek legal remedy regarding this matter.
9. Complainant: 'We should like this domain name transferred to us.'
10. Respondent: This domain belongs to the registered owner of Delamaracademy Ltd.
11. Complainant: 'We have not taken any legal steps yet.'
12. Respondent: I reserve the right to engage all legal means necessary to defend my interests and reputation regarding these matters."
7. Discussion and Findings
The Respondent and Ms McDonald
7.1 Before addressing the substance of the Complaint it is necessary to comment briefly on Ms MacDonald's relationship to the parties. The registrant of the Domain Name is Go-Catch Media Ltd and accordingly Go-Catch Media Ltd is the Respondent under the Policy. However, the Complainant appears to allege that it is Ms MacDonald who registered the Domain Name. Whilst Ms MacDonald objects to the Complainant's characterisation of her employment, she does not deny her connection with the Complainant's landlord. More importantly she does not appear to deny that she was the person who registered the Domain Name, nor the implication in the Complainant that she and the Respondent can be treated as one for the purposes of the application of the Policy. This decision, accordingly, proceeds on this basis.
What needs to be proved
7.2 To succeed under the Policy the Complainant must prove on the balance of probabilities, first, that he has rights in respect of a "name or mark" that is identical is similar to a Domain Name and secondly that the Domain Name is an Abusive Registration.
7.3 Abusive Registration is defined in paragraph 1 of the Policy in the following terms:
Abusive Registration means a Domain Name which either:
i. was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the complainant's rights; OR
ii. has been used in a manner which took unfair advantage of or was unfairly detrimental to the complainant's rights;
Complainant's Rights
7.4 "Rights", as defined under paragraph 1 of the Policy, include but are not limited to, rights enforceable under English law. As was stated by the appeal panel in DRS 00389 (Hanna-Barbera Productions Inc v Graeme Hay - scoobydoo.co.uk) "the requirement to demonstrate rights is not a particularly high threshold". Certainly, rights protectable under the English law of passing off are sufficient.
7.5 As I have already mentioned earlier in this decision, the Delamar Academy has operated for 17 years. The Complaint also refers to the fact that "any internet search will reveal numerous film and TV credits for Penny Delamar". These facts and the fame of Delamar Academy are not denied by the Respondent. In the Complaint the Complainant refers to the "Delamar Academy", the "Delamar Academy of Make-Up" and "Penny Delamar". However, I do not think this is of significance. It seems reasonably clear that the Complainant from at least the time of registration of the Domain Name, would have rights protectable under the English law of passing off in relation to the use of the name "Delamar Academy". In the circumstances, the Complainant has shown that it has rights in a name "identical or similar" to the Domain Name. Indeed, given that a space can not form part of a ".uk" domain name, I conclude that in the circumstances of this case the Domain Name is identical. Accordingly the Complainant has successfully made out the requirement of paragraph 2(a)(i) of the Policy.
Abusive Registration
7.6 In its Complaint, the Complainant makes essentially three allegations as to why it was that the Respondent registered the Domain Name. It is alleged that the purpose of registration was:
(i) as a "blocking registration";
(ii) "to confuse [the Complainant's] customers"; and
(iii) "to steal prospective students for the make-up courses that [Ms MacDonald] would like to set up".
7.7 The last two of these allegations are problematic. They are no more than assertions on the part of the Complainant. No evidence is offered by the Complainant to support them. For reasons that are described in great detail below, I do not accept the Respondent's explanation as to why it registered the Domain Name. But, it does not follow that the Complainant has shown on the balance of probabilities that these allegations are made out. I therefore decline to decide this matter on the basis of these last two allegations. This, therefore, leaves the Complainant's allegation that the Domain Name is a blocking registration.
The definition of "blocking registration"
7.8 A non-exhaustive list of factors which may evidence that a Domain Name is an Abusive Registration are set out in paragraph 3 of the Policy. Included in this list are circumstances indicating that the respondent registered or acquired the Domain Name "as a blocking registration against a name or a mark in which the Complainant has Rights".
7.9 The question of what constitutes proof of a blocking registration has been considered before in decisions in DRS 00120 (Peoplesoft UK Ltd v KL Kane -peoplesoft.co.uk) and DRS 00583 (Thomas Cook UK Limited v Whitley Bay Uncovered - club18-30uncovered.co.uk). In Peoplesoft, the expert stated that a blocking registration is a registration:
"1. designed to prevent a legitimate owner of rights in a name from registering and using the associated domain name; and
2. carried out in circumstances when the respondent is unable to demonstrate a prima-facie right in the name or valid reason to make the registration."
7.10 In Thomas Cook, however, the expert criticised the expert in Peoplesoft for producing a test which "could be taken to be implying that there is a burden on the Respondent to demonstrate either a prima-facie right in the name or a valid reason for making the registration", and that, if accepted, the second limb of the Peoplesoft definition would need to be rewritten to read:
"2. carried out in circumstances in which it is shown, on the balance of probabilities, that the Respondent has no right in the name and no valid reason to make the registration".
7.11 The expert in Thomas Cook went on to say:
"It seems to me there are two critical features of a 'blocking registration'. The first is that it must be against a name or mark in which the Complainant has rights. The second is one of motivation. Where a registration is alleged to be a 'blocking registration' a complainant, if it is to succeed, must prove on the balance of probabilities that a respondent's principal objective in registering or retaining the disputed domain name was to prevent the complainant from doing so."
7.12 The decision in Thomas Cook was reviewed by an Appeal Panel. However, the Panel did not consider the two differing views on the definition of "blocking registration" since it agreed with the expert that, on the facts of that case, the complainant had failed to show any legitimate interest in the specific domain names in issue.
7.13 So far as this case is concerned, perhaps the only distinction of significance between the two definitions is that Thomas Cook appears to require that "blocking" was the respondent's principal objective in registering and maintaining the registration of the domain name. If one compares the three examples in paragraph 3(a)(i) of the Policy which evidence that a domain name is an Abusive Registration, it can be seen that whilst A and C use the phrase "primarily for the purpose", B (blocking registrations) does not do so. In the circumstances, I am of the view that importing the concept of a primary or principal purpose when defining what constitutes a "blocking registration" is not justified. I proceed in this decision on this basis.
Application to this case
7.14 As a matter of fact, the Respondent's registration did prevent the Complainant from registering a domain name which was identical to a name in which the Complainant had Rights. However, did the Respondent intend to block the Complainant's registration? In my view the answer to that question is yes. The reasons for this are as follows:
(i) Although it is not expressly stated in the Complaint, it is nevertheless clear that the Complainant alleges that Ms McDonald knew of the existence of the Complainant and the use by the Complainant of the name "Delamar Academy" at the time she registered the Domain Name. I accept this to be the case. Indeed, that fact that she knew this is not surprising given her admitted connection with the Complainant's landlord. Further, there is no denial of such knowledge in the Response.
(ii) The Respondent's only explanation of its registration of the Domain Name is that it was done on behalf of its client "Delamaracademy Ltd". No explanation or evidence is provided by the Respondent as to who this client is, how the Respondent came to act for the client, nor the nature of the business that the Respondent allegedly provides. More importantly, there is no explanation or evidence as to how the client came to have essentially the same name as a party to whom Ms McDonald had links. "Delamar Academy" is not a name that is common or generic or descriptive of any goods and services that a business might provide. Therefore, any suggestion that a company unrelated to the Complainant coincidentally adopted the same name as the Complainant, is simply not credible. Any suggestion that, after coincidentally choosing this name it also coincidentally approached an individual who had the connection with the Complainant that I have already described, frankly beggars belief.
7.15 There is one other point that needs to be added here. It is a point which I have not put to either of the parties for comment and therefore does not form the basis of my decision in this case. Nevertheless, it is a fact that is consistent with my finding and worth recording. The Respondent claims that the Domain Name was requested by Delamaracademy Ltd. There is indeed a company registered in England and Wales with the name Delamaracademy Limited. However, a check of the companies register reveals that this company was only registered on 19 March 2004. In other words, no English company with a name the same as that of the Domain Name was in existence at the time that the Domain Name was registered. Indeed, the company bearing that name only came into existence 4 weeks after the filing of a Response in these proceedings. The timing of the registration of this company is, to say the least, curious
7.16 In the circumstances, the Complainant has prima facie shown that the circumstances identified under paragraph 3(a)(i)B of the Policy apply in this case and that the Domain Name is an Abusive Registration. In the absence of any credible evidence from the Respondent to the effect that this is not the case, I conclude that the Complainant has successfully made out the requirements of paragraph 2(a)(ii) of the Policy.
8. Decision
8.1 I find that the Complainant has Rights in the name Delamar Academy, which is identical to or similar to the Domain Name, and that the Domain Name, in the hands of the Respondent, is an Abusive Registration by reason of being a blocking registration in accordance with paragraph 3(a)(i)B of the Policy.
8.2 I therefore determine that the Domain Name should be transferred to the Complainant.
Matthew Harris
Date: 29 April 2004